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A tribute band that was sued by Earth, Wind & Fire for trademark infringement is firing back with a bold counterargument: That the famed R&B act has actually abandoned any intellectual property rights to its name.
In a court filing on Wednesday (Aug. 30), the smaller band — which calls itself Earth Wind & Fire Legacy Reunion — argued that the original group had allowed so many tribute bands to use its name without repercussion that it can no longer claim exclusive rights to it.
“Due to the unchecked third-party use of the phrase, [EW&F] has abandoned ‘Earth, Wind & Fire,’ and [the name] has lost its trademark significance,” wrote attorneys for Substantial Music Group, which operates Legacy Reunion.
The new filing listed out a dozen other tribute acts that allegedly feature “Earth, Wind & Fire” as part of their name, including “September: A Tribute to Earth, Wind & Fire” and “Let’s Groove Tonight: The Ultimate Earth, Wind & Fire Tribute Band,” as well as even simpler names like simply “Earth Wind & Fire Tribute.”
“[The band] has taken no action to enforce its purported trademark rights against any of the third-party vocal and instrument groups that have been using the phrase,” Legacy Reunion wrote in Wednesday’s filing. “The present civil action represents the first occasion on which Counter-Defendant has sought to enforce its registered trademarks against another party.”
Earth, Wind & Fire has continued to tour since founder Maurice White died in 2016, led by longtime members Philip Bailey, Ralph Johnson and White’s brother, Verdine White. The band operates under a license from Earth Wind & Fire IP, a holding company owned by Maurice White’s sons that formally owns the name.
In a March lawsuit, that company accused Legacy Reunion of trying to trick consumers into thinking it was the real Earth Wind & Fire. Though it called itself a “Reunion,” the lawsuit said the tribute band contained only a few “side musicians” who briefly played with Earth, Wind & Fire many years ago.
“Defendants did this to benefit from the commercial magnetism and immense goodwill the public has for plaintiff’s ‘Earth, Wind & Fire’ marks and logos, thereby misleading consumers and selling more tickets at higher prices,” the group’s lawyers wrote.
Tribute acts — groups that exclusively cover the music of a particular band — are legally allowed to operate, and they often adopt names that allude to the original. But they must be clear that they are a tribute band, and they can get into legal hot water if they make it appear that they are affiliated with or endorsed by the original. In 2021, ABBA filed a similar trademark lawsuit against a band that had been touring under the name ABBA Mania, calling it “parasitic”; that suit was quickly settled after ABBA Mania agreed to stop using the name.
According to Earth, Wind & Fire’s lawyers, the use of “Legacy Reunion” was not a clear enough distinction. The lawsuit cited alleged examples of angry consumers who mistakenly bought tickets for the wrong band, including one that read, “This was not Earth Wind and Fire. NO Philip Bailey or Verdine White. It was just a band playing Earth Wind and Fire music. I purchased 3 tickets and I was very disappointed. It was truly false advertisement. I want my money back!!!!!”
Wednesday’s filing came as a so-called “answer and counterclaims” — a standard response to any lawsuit, in which a defendant like Legacy Reunion can formally deny the accusations and level their own at their opponent.
In its counterclaims, Legacy Reunion argued that the band’s lack of enforcement against other tribute bands means that its trademark to “Earth, Wind & Fire” should be formally “cancelled.”
Selena Quintanilla‘s father, Abraham Quintanilla Jr., is suing Los Angeles-based Catalina Classic Cruises over an “unauthorized” live tribute in honor of the late Tejano star. Explore Explore See latest videos, charts and news See latest videos, charts and news According to the lawsuit, filed Monday (July 10) in the Central District of California, Selena’s father […]
The band OK Go has reached a confidential settlement to end a bizarre legal battle with Post Foods over a new line of on-the-go cereal packages called “OK Go!”
Just months after OK Go — a power pop band best known for its viral music videos — vowed to fight back against a “big corporation” that “chose to steal the name of our band to market disposable plastic cups of sugar to children,” attorneys for both sides asked a Minnesota federal judge to dismiss the lawsuit permanently, with each side paying their own legal bills.
The filing said that the two sides had “settled this action on terms agreeable to all parties,” but did not include specific terms of the agreement in public court records, like whether the band would be paid or if Post would change the brand name. Neither side immediately returned requests for comment on Friday (June 2).
The settlement will resolve an unusual legal dispute that pitted a pop band against a multinational food company, asking the question: Will consumers who see a portable snack package of Fruity Pebbles on a supermarket shelf think that a band with a similar name had endorsed it?
The fight started in September when an attorney for the band sent a cease-and-desist letter warning Post that OK Go was “surprised and alarmed” to see Post’s new product line. He claimed the name infringed the trademark rights to the band’s name since it would “suggest to consumers that OK Go is endorsing Post’s products,” or falsely imply that the cereal company had received permission to use it.
“Our client regards this matter with the utmost seriousness and has authorized us to take all steps necessary in any venue to protect its rights,” OK Go’s attorney wrote in the September letter. “If we do not hear from you within 10 days of the date of this letter, we will assume that Post does not wish to resolve this matter amicably.”
A week later, an attorney representing Post responded, saying that the company must “respectfully disagree” with the band’s accusations. The attorney argued that rock music and breakfast cereal were “clearly unrelated” products and that the phrase “OK Go” was merely a common term that had previously been used by many other companies on their products.
In January, Post took the battle to court, asking a federal judge for what’s known as a “declaratory judgment” — meaning a pre-emptive ruling that the company did nothing wrong. Post argued that the trademark rights of a rock band like OK Go don’t extend to an unrelated product like cereal and that the new cups are clearly marked with Post’s own brand names to avoid any confusion.
“Without resolution by this court, Post will be unfairly forced to continue investing in its new OK GO! brand while under the constant threat of unfounded future litigation by defendants,” the cereal company wrote in its lawsuit.
In a statement to Billboard at the time, the members of OK Go said they’d been surprised to learn of Post’s lawsuit.
“A big corporation chose to steal the name of our band to market disposable plastic cups of sugar to children. That was an unwelcome surprise, to say the least,” the band wrote. “But then they sue US about it? Presumably, the idea is that they can just bully us out of our own name, since they have so much more money to spend on lawyers? I guess that’s often how it works, but hopefully, we’ll be the exception.”
According to Post’s lawsuit, the company had offered to pay the band as part of a “good faith effort” to resolve the dispute without resorting to litigation, despite its belief that the accusations lacked legal merit. The company claimed OK Go rejected that offer and made no counter-proposal, leaving Post with no choice but to file a lawsuit.
Disco legends Village People sent a cease-and-desist letter to Donald Trump on Monday threatening legal action over a costume-clad tribute band at his Mar-a-Lago resort that’s allegedly been performing “Macho Man” and other hit songs without permission.
In the letter, Karen Willis (wife of Village People lead singer Victor Willis) warned Trump’s lawyers that such performances potentially violate federal trademark law by confusing consumers into thinking the real band was playing at the former president’s resort.
Since a video of the Mar-a-Lago performance was posted on Twitter last week, Willis said the band had been “inundated” with social media posts from people who thought it was the real Village People.
“The performance has and continues to cause public confusion as to why Village People would even engage in such a performance. We did not,” Willis wrote in the letter, obtained by Billboard. “Though my husband has tolerated your client’s use of his Village People music, we cannot allow such use by him to cause public confusion as to endorsement.”
In a statement to Billboard on Monday, Trump attorney Joseph Tacopina said: “I will only deal with the attorney of the Village People, if they have one, not the wife of one of the members. But they should be thankful that President Trump allowed them to get their name back in the press. I haven’t heard their name in decades. Glad to hear they are still around.”
Top artists have long chafed at the use of their music by politicians, particularly conservatives. Foo Fighters and John Mellencamp blasted John McCain for using their music during the 2008 presidential election, and Neil Young, Guns N’ Roses, Pharrell Williams, Rihanna and the estate of Tom Petty have all spoken out about their music being used at campaign events for Trump.
Willis has even already complained about it once. In June 2020, angered by Trump’s use of police force to clear protesters from Lafayette Square in Washington, D.C., Willis took to social media to request that the president stop playing his music at events.
Owing to the complex thicket of blanket licenses that govern the public performance of music, it’s actually more complicated than you might expect for artists to prevent politicians from playing their music at rallies. Many times, artists lack a clear route to take formal legal action, and instead are left to complain in the court of public opinion.
But in the letter this week, Willis says that a live performance by a tribute band dressed to look like Village People — a construction worker, a cowboy, a policeman and so on — crossed the line into a clearer violation of the law by suggesting that the band had endorsed him.
“Your client is hereby on notice that U.S. trademark law protects against the unauthorized use of the Village People image and trade dress,” Willis wrote. “To be certain, the use of the group’s image and likeness at Mar-A-Lago was unauthorized.”
If such performances don’t stop, Willis made a clear threat of legal action: “We shall be forced to bring suit preventing further use, not only of the Village People trademarked image and trade dress, but of the music as well (and we’d hate to have to do that) but such combined use causes public confusion and is suggestive of endorsement.”
The letter gave Trump 10 days to respond.
The Rolling Stones’ famed “tongue and lips” logo is at the center of a new federal lawsuit, launched by a small clothing chain that says it was unfairly threatened by Universal Music Group’s Bravado merch company with “unfounded” infringement litigation over a similar logo.
In a lawsuit filed Wednesday (March 29), apparel retailer Simply Southern claimed it had received a cease-and-desist letter from Bravado, a unit of UMG that sells licensed merchandise for the Stones and dozens of other major artists. The letter allegedly took aim at T-shirts that featured a “disembodied mouth,” claiming they were confusingly similar to the iconic logo.
But lawyers for Simply Southern say its apparel designs were “clearly and demonstrably different,” and they want a federal judge to rule that the company “has not infringed Bravado’s asserted intellectual property rights.”
“Simply Southern’s mouth images show many elements that are very different from Bravado’s asserted tongue/lips image,” the company wrote in its complaint. “For example, Simply Southern’s images have a more plump lower lip, more square teeth, and a wider and more open mouth when compared to Bravado’s asserted image.”
A representative for Bravado declined to comment. The Rolling Stones themselves are not named in the lawsuit and are not accused of any wrongdoing; a rep for the band did not respond to a request for comment on the situation.
Called “the most famous logo in rock ’n’ roll” by the New York Times, the “tongue and lips” image was created in 1970 by John Pasche, a London art student who had been commissioned by the band to create a poster for its upcoming European tour. The design was then tweaked slightly by designer Craig Braun before it appeared in its final version on the back cover of the band’s 1971 album Sticky Fingers.
Since then, the Stones logo has appeared countless times — on music releases, T-shirts, stickers, posters and even as the stage for the band’s halftime performance during Super Bowl XL.
According to Wednesday’s lawsuit, Bravado sent Simply Southern a letter on March 1, claiming to be the exclusive licensee to sell Rolling Stones merchandise. The lawyers for Bravado warned Simply Southern that its products were “confusingly similar” to the tongue and lips design, and that such offending merchandise infringed the band’s trademarks.
The complaint filed in federal court (available in its entirety here) includes images Simply Southern’s two offending logos. Both appear visually similar to the Stones logo, but with differences. One is highly similar in shape, but features a different pink-and-leopard print color scheme; the other features the same red color scheme as the Stones logo, but includes a different orientation with different tongue placement.
From Simply Southern’s perspective, that’s enough difference to avoid liability for trademark infringement.
“Because the mouth is an inherently expressive body part, subtle changes in shape and positioning result in markedly different interpretations of emotional expression,” the company wrote. “Bravado’s asserted image is mostly devoid of emotion but has slight hints of either playfulness or defiance. By contrast, Simply Southern’s images are deeply expressive.”
Read Simply Southern’s full complaint here:
The Isley Brothers are headed to court over the trademark rights to the band’s name.
In a lawsuit filed Monday in Chicago federal court, Rudolph Isley accused his brother Ronald Isley of improperly attempting to secure a federal trademark registration on the “The Isley Brothers” – even though the name is supposed to be jointly owned.
“Counsel for defendant Ronald Isley has asserted in correspondence that defendant alone has exclusive ownership of the [trade]mark,” Rudolph’s lawyers wrote in their complaint. “These assertions … are false.”
The lawsuit claims that Ronald, “acting without the knowledge or approval of Rudolph,” applied in 2021 at the U.S. Patent and Trademark Office to register “The Isley Brothers” as a trademark under his name alone. The agency approved the application and registered the trademark last year.
In filing the case, Rudolph is asking a judge to declare that the trademark rights to the name are “jointly owned by Plaintiff and Defendant equally.” He also wants a ruling that forces Ronald to explain how he has “exploited” the trademark and to share any revenue derived from it.
An attorney for Ronald did not immediately return a request for comment.
Band names are a constant source of trademark disputes, typically among various current and former members who disagree about who has the right to keep using a famous title. Who truly constitutes the band? Is it the members, or an LLC that owns the rights to the name? Is it the original lineup, or the one that produced the biggest hits?
Journey, Stone Temple Pilots, Jefferson Starship, the Rascals, the Ebonys, the Commodores and the Platters have all resorted to such litigation over the years. Members of the Beach Boys spent more than 10 years fighting over their name, before a settlement was reached in 2008. And Morris Day recently had an ugly fight with the Prince estate over the trademark rights to his band name, The Time.
In the case of the Isleys, Rudolph claims that since the 1986 death of their third brother O’Kelly Isley, he and Ronald have been the equal co-owners of the group’s intellectual property. He says that arrangement is formalized in two overlapping holding companies, Isley Brothers Royalty Venture I SPC Inc. and Isley Brothers L.L.C.
“Both plaintiff and defendant are currently 50% owners of all rights and interests of the group, with neither party having the authority to enter into deals concerning the group or the exploitation of the mark without consent of the other party,” Rudolph’s lawyers wrote.
Ronald’s lawyers see things differently. In back-and-forth legal correspondence sent before Monday’s case was filed, his attorneys had argued that the “Isley Brothers” trademarks are the property of those who have actually been using a name – and that Rudolph has not performed with the band since 1986.
“Rudolph has not used the mark in approximately thirty-six (36) years,” Ronald’s lawyer, Navarro W. Gray, wrote to his brother’s attorneys in a January letter. “Thus, Ronald’s profits from the business endeavors he has sought and created for himself, in relation to The Isley Brother’s brand, are not to be shared as he has been the party actually using the mark in commerce.”
Read Rudolph Isley’s entire complaint here:
A year after Morris Day accused the Prince estate of trying to “rewrite history” by “taking my name away,” it appears that the ugly dispute over his band name has been worked out. But Day’s attorney tells Billboard that other key issues with the estate remain unresolved.
Last year’s outcry was prompted by a threat letter in which attorneys for the estate complained about Day’s efforts to own the trademark registration “Morris Day and The Time” — the name of the Prince-affiliated band he’s led for years. In it, they told him he had “no right” to use the name “in any form.”
That dispute now appears to be in the rearview mirror. In December, the federal trademark office formally published Day’s application for such a trademark registration. At that point, the Prince estate had 30 days to file an opposition case against him, but records show it did not do so.
The progress is perhaps unsurprising, given the change in the control of the Prince estate that has taken place in the year since Day’s complaints.
Last year’s threat letter came from Comerica, a court-appointed bank that administered the estate during a years-long legal battle. With that case finally closed, the Prince estate is now in the hands of its permanent stewards: industry bigwig Primary Wave on the one hand, and a group of heirs and advisors led by longtime Prince attorney Londell McMillan on the other in what amounts to a 50-50 split. And during last year’s fracas, both Primary Wave and McMillan voiced public support for Day.
Day and Prince were frequent collaborators in the early 1980s. Day was the lead singer of The Time, a group known for their high-octane funk; Prince wrote and produced much of their music under an alias. They toured together, and The Time appeared prominently as Prince’s rival band in the 1984 film Purple Rain. In a 1990 interview, Prince said The Time was “the only band I’ve ever been afraid of.”
In December 2021, attorneys for the estate sent a letter to Day over the trademark registration on “Morris Day and The Time,” a name he had continued to use on tours for decades. They warned him that it violated a 1982 written agreement in which Day allegedly agreed that Prince’s company would retain all rights to the band’s name. Unless Day reached a deal with the estate, the attorneys said they would file a formal case against him at the federal trademark office.
A few months later, Day spoke out publicly about the dispute, saying he had “spent 40 years of my life” building the name and that Prince had had “no problem” with him using it. “Now that Prince is no longer with us, suddenly, the people who control his multi million dollar estate want to rewrite history by taking my name away from me, thus impacting how I feed my family,” Day wrote in a social media post.
Day’s post quickly sparked outrage against Comerica. Former Prince bassist Nik West took to Instagram to complain: “I don’t see how ‘randoms’ can tell you this! Morris Day and the Time forever … we ALL know what time it is!” Primary Wave, which at that point was not yet in control of the estate, quickly joined the chorus of critics, telling Comerica to “do the right thing here.”
Now, a year later, Day’s trademark application is advancing, and his attorney Richard Jefferson tells Billboard that he and his client are optimistic that “things will be amicable moving forward.” But despite the headway on the “Time” name, Jefferson says they’re still working to resolve broader issues with the Prince estate.
“All I can say at this point is that we are making progress,” he said in an email. “The trademark is only one of a few issues at play.”
Case in point: Public records show that Day is also currently seeking to regain his ownership rights to two of The Time’s biggest songs using copyright law’s so-called termination right — a provision that allows creators to win back control of works that they sold away decades earlier.
In June, Day’s attorneys submitted formal notice that he planned to terminate the estate’s control over his songwriting stakes in “Jungle Love,” which hit No. 20 on the Billboard Hot 100, and “The Bird,” which reached No. 36 on the chart. Both songs also appeared prominently in Purple Rain.
If the termination process is completed, Day would recover a 50% share of the “Jungle Love” composition and a 33 percent stake in “The Bird” composition, according to the filings. The remaining shares of those songs, originally owned by Prince, would still be owned by the estate. But in practice, such filings are often simply a starting point, leading to a renegotiation of rights deals rather than an outright termination.
Representatives for both halves of the Prince estate did not return requests for comment.
Famed funk act Earth, Wind & Fire is suing a rival group that’s been performing under the name “Earth Wind & Fire Legacy Reunion,” calling them imposters who are infringing the band’s trademarks to “mislead the ticket-buying public.”
In a lawsuit filed Tuesday (March 7) in Florida federal court, the company that owns the band’s intellectual property argued that Legacy Reunion’s only claim to the name is a few “side musicians” who briefly played with Earth, Wind & Fire many years ago.
Despite that allegedly spurious link, the lawsuit says the rival group’s organizers “hatched a scheme to falsely imply in advertising that this new group was the real Earth, Wind & Fire.”
“Defendants did this to benefit from the commercial magnetism and immense goodwill the public has for plaintiff’s ‘Earth, Wind & Fire’ marks and logos, thereby misleading consumers and selling more tickets at higher prices,” the group’s lawyers wrote.
According to the lawsuit, the allegedly phony group is directly competing with the “real” Earth Wind & Fire, which has continued to tour since founder Maurice White died in 2016. Led by longtime members Philip Bailey, White’s brother Verdine and Ralph Johnson, the band operates under a license from Earth Wind & Fire IP LLC, a holding company owned by White’s sons.
In its lawsuit on Tuesday, attorneys for that company claimed that the organizers of Legacy Reunion (Substantial Music Group LLC and Stellar Communications, Inc.) have misled not only ticket buyers but resale websites like StubHub.
“The [Stubhub] ticket listing combines concerts by the real Earth, Wind & Fire with the band defendants’ promote, and the tickets offered for concerts by the band Defendants promote have nothing to do with the real Earth, Wind & Fire.”
Tribute acts – groups that exclusively cover the music of a particular band — are legally allowed to operate, and they often adopt names that allude to the original. But they can get into legal hot water if they make it appear that they are affiliated with the original. In 2021, ABBA filed a similar trademark lawsuit against a band that had been touring under the name ABBA Mania, calling it “parasitic.”
In the current case, Substantial Music Group allegedly used “Legacy Reunion” in listings (seemingly a reference to the former EWF members) but often in a separate font or in a different part of a logo. The group later allegedly changed the name to “Legacy Reunion of Earth Wind & Fire Alumni,” but the lawsuit claims the changes weren’t enough to avoid confusion.
Among other things, the lawsuit cited alleged examples of angry consumers who mistakenly bought tickets for the wrong band, including one that read, “This was not Earth Wind and Fire. NO Philip Bailey or Verdine White. It was just a band playing Earth Wind and Fire music. I purchased 3 tickets and I was very disappointed. It was truly false advertisement. I want my money back!!!!!”
In a statement to Billboard on Wednesday in response to the lawsuit, Substantial Music Group founder Richard Smith called the trademark complaint “disappointing.”
“It is sad that a greedy corporation has chosen to use trademark law to attempt to pass judgment on which historic members of Earth, Wind & Fire are worthy of being called alumni of the band,” Smith said. “I was personally a member of the band for five years and performed on two tours and one album. I’m proud to be an alumnus of the musical group and the corporation’s dismissiveness of my and others’ contributions Earth, Wind & Fire is hurtful. We will not be erased.”
Read the entire lawsuit here:
Eminem has picked a legal fight with two “Real Housewives” over their efforts to register the name of their Reasonably Shady podcast as a trademark.
Citing his Slim Shady nickname, lawyers for the superstar (real name Marshall B. Mathers) last week quietly launched a case aimed at blocking Gizelle Bryant and Robyn Dixon (stars of the Real Housewives of Potomac) from securing a federal trademark registration on their podcast’s name.
In a petition filed on Dec. 14 at the U.S. trademark office, Eminem’s attorneys said American consumers view the term “Shady” as a “unique and distinctive” term that’s linked to the rapper – meaning they would likely think that “Reasonably Shady” was somehow connected to Eminem.
“Confusion is unavoidable,” the rapper’s lawyers wrote. “Applicant’s mark ‘Reasonably Shady’ simply looks and sounds like ‘Shady’ and suggests that it represents the services of Mathers.”
In a statement to Billboard on Tuesday (Feb. 21), Dixon and Bryant’s attorney Andrea H. Evans said the duo “intend to defend their trademark application” in the face of Eminem’s accusations. “The trademarks are not confusingly similar and the services are not related,” Evans said.
Bryant and Dixon launched “Reasonably Shady” in 2021, describing it a series of “conversations about being fearless women as they recount stories from their exciting lives.” They’ve released 80 episodes since, covering dating, relationships, motherhood, style, current events and other topics.
Last year, the duo applied at the U.S. Patent and Trademark Office to secure a trademark registration on the name for a wide range of offerings, including not just producing a podcast but also selling cosmetics, candles and apparel. If granted, the registration would make it easier for Bryant and Dixon to sue someone who used the term “Shady” for similar goods or services.
But last week, Eminem’s attorneys filed their case at the Trademark Trial and Appeal Board, a court-like body within the USPTO where rival trademark owners can battle over who has better rights to a disputed name.
The rapper, who has “Slim Shady” and “Shady” for decades as the name of a dark alter ego, already owns a number of such trademark registrations on those names, covering music services and merchandise. Giving the similarity of the names, his lawyers say consumers will associate Bryant and Dixon’s proposed trademark with Eminem.
“Applicants use and registration of the mark ‘Reasonably Shady’ is likely to cause confusion in the minds of consumers,” his attorneys wrote, saying the star would be “damaged” by the registration of Bryant and Dixon’s trademark.
A rep for Eminem did not immediately return a request for comment on the case. Dixon and Bryant have until March 26 to file a formal response at the Trademark Trial and Appeal Board.
Read Eminem’s entire petition here:
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Eminem recently filed legal opposition to the name of a podcast that uses a portion of his famous nickname. In the filing, the Real Slim Shady believes that a burgeoning podcast, Reasonably Shady, will cause confusion as it pertains to his likeness and brands.
Page Six exclusively reports that on Feb. 14, Eminem, real name Marshall Mathers, filed the objection to the name Reasonably Shady, a podcast series hosted by Real Housewives of Potomac stars, Gizelle Bryant and Robyn Dixon. The pair filed for a trademark to sell merch with the title of their series emblazoned upon the gear.
The outlet adds that Eminem believes the show’s title would confuse many of his consumers who know him as Shady, and it was reported that he also owns the trademark to Shady for use on merchandise.
Bryant and Dixon’s podcast launched in 2021 and they recently filed for the trademark for Reasonably Shady at the top of the year, hence Eminem’s filing this earlier this month in response. The hosts intend to sell hoodies, socks, water bottles, and other merchandise.
As Page Six shared in their report, a reply from Bryant and Dixon has yet to occur.
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Photo: VALERIE MACON / Getty